`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`MOMENTUM DYNAMICS CORPORATION,
`Petitioner
`
`v.
`
`WITRICITY CORPORATION,
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2021-01166
`Patent No. 8,304,935
`
`________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`TABLE OF CONTENTS
`
`
`INTRODUCTION ........................................................................................... 1
`
`CLAIM CONSTRUCTION ............................................................................ 1
`
`I.
`
`II.
`
`III.
`
`STANDARD FOR GRANTING INTER PARTES REVIEW ......................... 2
`
`IV. THE PETITION FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT ANY CLAIM OF THE ’935 PATENT IS
`UNPATENTABLE .......................................................................................... 3
`
`A. Ground 1 fails to show that O’Brien discloses a source resonator and a
`second resonator coupled to provide near-field wireless energy transfer 3
`B. Ground 2 incorporates the flawed reasoning of Ground 1 by reference,
`and thus fails for the same reasons ........................................................... 7
`
`V.
`
`CONCLUSION ................................................................................................ 7
`
`
`
`i
`
`
`
`
`I.
`
`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`
`INTRODUCTION
`WiTricity Corporation (“Patent Owner”) submits this Preliminary Response
`
`to the Petition for Inter Partes Review (“IPR”) of U.S. Patent No. 8,304,935 (the
`
`“’935 patent”) filed by Momentum Dynamics Corporation (“Petitioner”). For at
`
`least the reasons described herein, the Petition fails to demonstrate a reasonable
`
`likelihood that any claim of the ’935 patent is unpatentable, and thus should be
`
`denied.
`
`II. CLAIM CONSTRUCTION
`All claim terms in this proceeding are to be construed according to the
`
`Phillips standard. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37
`
`C.F.R. §42.100. No claim construction is necessary to deny institution. Patent
`
`Owner’s arguments for denial do not hinge on the outcome of an actual
`
`controversy about any claim construction expressed in the Petition. See Wellman,
`
`Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms
`
`need only be construed to the extent necessary to resolve the controversy.”). As
`
`detailed below, the defects in the Petition are readily identifiable without defining
`
`any specific claim term.1
`
`
`1 Patent Owner reserves the right to make claim construction arguments in other
`
`proceedings.
`
`1
`
`
`
`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`
`
`III. STANDARD FOR GRANTING INTER PARTES REVIEW
`The Board may grant a petition for inter partes review only where “the
`
`information presented in the petition … shows that there is a reasonable likelihood
`
`that the petitioner would prevail with respect to at least 1 of the claims challenged
`
`in the petition.” 35 U.S.C. §314(a); 37 C.F.R. §42.108(c). Petitioners bear the
`
`burden of showing that this statutory threshold has been met. See Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,756 (Aug. 14, 2012). Critically,
`
`Petitioners must fulfill this burden based on “information presented in the petition”
`
`(35 U.S.C. §314(a)), and the law forbids Petitioners from subsequently adding
`
`theories/arguments that should have been part of their initial Petition. Intelligent
`
`Bio-Systems, Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir.
`
`2016) (citing to 35 U.S.C. § 312) (“It is of the utmost importance that petitioners in
`
`the IPR proceedings adhere to the requirement that the initial petition identify
`
`‘with particularity’ the ‘evidence that supports the grounds for the challenge to
`
`each claim.’”); see also Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2154
`
`(2016) (Alito, J. concurring in part and dissenting in part) (“Thus, if a petition fails
`
`to state its challenge with particularity—or if the Patent Office institutes review on
`
`claims or grounds not raised in the petition—the patent owner is forced to shoot
`
`into the dark. The potential for unfairness is obvious.”).
`
`
`
`2
`
`
`
`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`
`
`IV. THE PETITION FAILS TO DEMONSTRATE A REASONABLE
`LIKELIHOOD THAT ANY CLAIM OF THE ’935 PATENT IS
`UNPATENTABLE
`A. Ground 1 fails to show that O’Brien discloses a source resonator
`and a second resonator coupled to provide near-field wireless
`energy transfer
`Ground 1 of the Petition alleges that claims 1, 5-8, 15, and 19-22 are
`
`anticipated by O’Brien. As explained below, the Ground fails because Petitioner
`
`points to disclosure of multiple separate components in O’Brien to address each of
`
`the source resonator and second resonator recited in the independent claims. This
`
`is clearly improper in an anticipation context, and thus, as explained below,
`
`Ground 1 must fail.
`
`Independent claims 1 and 15 of the ’935 patent recite “a source resonator”
`
`and “a second resonator located a distance from the source resonator.” ’935 patent,
`
`claims 1, 15. In Ground 1 (anticipation over O’Brien), the Petition argues that
`
`“O’Brien’s system includes a ‘Tunable Resonant Circuit’ on the ‘Source Side’”
`
`(or “source side resonant circuit”) that corresponds to the claimed ‘source
`
`resonator.’” Petition, 17.2 The Petition further argues that O’Brien’s system
`
`“includes a ‘Resonant Circuit’ on the ‘Receiver Side’” (or “receiver side resonant
`
`circuit”) “that…corresponds to the claimed ‘second resonator.’” Petition, 20. The
`
`
`2 All emphasis added unless otherwise indicated.
`
`3
`
`
`
`
`Petition includes the following annotated figure 5-1 from O’Brien that confirms
`
`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`
`this mapping of components:
`
`
`
`O’Brien, FIG. 5-1 (as annotated at Petition, 13)
`Independent claims 1 and 15 of the ’935 patent also recite that “the source
`
`resonator and the second resonator are coupled to provide near-field wireless
`
`energy transfer among the source resonator and the second resonator.” ’935
`
`patent, claims 1, 15. In addressing this claim element, the Petition relies entirely
`
`on disclosure from O’Brien that fails to even mention the components it
`
`previously identified as the claimed “source resonator” (the “Tunable Resonant
`
`Circuit on the Source Side,” see Petition, 17) and the claimed “second resonator”
`
`(the “Resonant Circuit on the Receiver Side,” see id., 20). See id., 22-24 (analysis
`
`4
`
`
`
`
`of claim element [d] including no mention of the “Tunable Resonant Circuit on the
`
`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`
`Source Side” or the “Resonant Circuit on the Receiver Side”). In fact, the
`
`disclosure Petitioner identifies from O’Brien as allegedly teaching this claim
`
`element relates entirely to “source coils” or “sources,” and “receiving coils” or
`
`“receivers.” See id., 23-24; O’Brien, 26 (referring to “source coils” as “sources”),
`
`27 (referring to “receiving coils” as “receivers”).
`
`O’Brien makes clear that these “source coils” and “receiving coils” are
`
`separate from the “source side resonant circuit” (the alleged source resonator) and
`
`the “receiver side resonant circuit” (the alleged second resonator). See, e.g.,
`
`O’Brien, 118-125, 132-136. For example, O’Brien describes that the system
`
`includes a “single-stage resonant circuit per source coil,” and that this “source side
`
`resonant circuit” can be used to step a power converter output voltage (which can
`
`be “substantially smaller than the source coil voltage”) to a desired voltage for the
`
`source coil. Id., 118-119. O’Brien thus makes clear that the “source side resonant
`
`circuit” and the “source coil” are separate components. See id. With respect to the
`
`receiver side, O’Brien makes clear that the “receiver side resonant circuit” is used
`
`to perform a “voltage transformation” to step up “very small induced voltage on
`
`the receiving coils,” thereby indicating that the “receiver side resonant circuit” and
`
`the “receiving coils” are separate components. See id., 133.
`
`5
`
`
`
`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`
`In addition, the following annotated FIG. 5-1 from O’Brien clearly shows
`
`
`
`the source coils (annotated in blue) and the receiving coils (annotated in red),
`
`which form the “Loosely Coupled Transformer,” are separate from the source side
`
`and receiver side resonant circuits. See, e.g., id., FIGS. 2-4 to 2-9 (showing shapes
`
`of source coils similar to that shown in FIG. 5-1), FIG. 2-10 (showing receiving
`
`coil shaped similarly to that shown in FIG. 5-1):
`
`O’Brien, FIG. 5-1 (further annotated from version at Petition, 13)
`
`Accordingly, Petitioner has not shown O’Brien to disclose that the alleged
`
`source resonator and the alleged second resonator are “coupled to provide near-
`
`field wireless energy transfer among the source resonator and the second
`
`
`
`6
`
`
`
`
`resonator” as recited in the claim. Thus, because all claims challenged in Ground 1
`
`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`
`include this feature, Ground 1 fails in its entirety.
`
`B. Ground 2 incorporates the flawed reasoning of Ground 1 by
`reference, and thus fails for the same reasons
`Ground 2 of the Petition alleges obviousness of all claims of the ’935 patent
`
`over O’Brien in view of Haaster. For each of the challenged independent claims
`
`(1, 15, and 23), the Petition incorporates the Ground 1 arguments discussed above
`
`by reference into Ground 2. See Petition, 51 (incorporating analysis from Element
`
`1[c] in Ground 1 to address claims 1 and 15), 73 (incorporating analysis from
`
`Elements 1[c] in Ground 1 to address claim 23). Thus, Ground 2 suffers from the
`
`same issues as Ground 1, and thus also fails in its entirety.
`
`V. CONCLUSION
`Patent Owner respectfully submits that the Petition does not show that there
`
`is a reasonable likelihood that any claim of the ’935 patent is unpatentable. Thus,
`
`the Board should deny the Petition and no IPR should be instituted.
`
`
`
`
`
`7
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: October 20, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/Daniel D. Smith/
`Joshua A. Griswold, Reg. No. 46,310
`W. Karl Renner, Reg. No. 41,265
`Daniel D. Smith, Reg. No. 71,278
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorneys for Patent Owner
`
`8
`
`
`
`
`
`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`
`CERTIFICATION UNDER 37 CFR §42.24(d)
`
`Under the provisions of 37 CFR § 42.24(d), the undersigned hereby certifies
`
`that the word count for the foregoing Patent Owner’s Preliminary Response to
`
`Petition totals 1,264, which is less than the 14,000 allowed under 37 CFR §
`
`42.24(b)(1).
`
`
`
`Dated: October 20, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Daniel D. Smith/
`Joshua A. Griswold, Reg. No. 46,310
`W. Karl Renner, Reg. No. 41,265
`Daniel D. Smith, Reg. No. 71,278
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorneys for Patent Owner
`
`9
`
`
`
`Case No. IPR2021-01166
`Attorney Docket: 25236-0267IP1
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§42.6(e), the undersigned certifies that on October
`
`20, 2021, a complete and entire copy of this Patent Owner’s Preliminary Response
`
`was provided via email to Petitioner by serving the correspondence email address
`
`of record as follows:
`
`Jonathan M. Strang
`Inge A. Osman
`Lisa K. Nguyen
`Jeffrey G. Homrig
`Blake R. Davis
`Michael T. Pierce
`Latham & Watkins LLP
`555 Eleventh Street, NW, Ste. 1000
`Washington, DC 20004-1304
`
`E-mail: jonathan.strang@lw.com
`Inge.osman@lw.com
`lisa.nguyen@lw.com
`Jeff.homrig@lw.com
`blake.davis@lw.com
`mike.pierce@lw.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`10
`
`
`
`
`
`/Diana Bradley/
`
`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
